PTAB Denies Institution Of Follow-On Petition From Similarly Situated Defendant
By: Tom Ritchie and Matt Johnson – A recent PTAB decision considered a follow-on petition for IPR in view of a prior filed petition by a different, but similarly situated, petitioner.
After SAS, Indefinite Claims Can Be A Definite Problem For IPR Petitioners
By: John Marlott – A recent PTAB decision raises new unresolved estoppel issues post-SAS where the PTAB refused to find means-plus-function claims unpatentable; being indefinite, the scope and meaning of the claims could not be ascertained such that the differences between the claims and the asserted prior art could not be determined. Nevertheless, these claims were subject to the PTAB’s FWD potentially implicating § 315(e) estoppel.
Failure to Appeal After SAS Results in Estoppel as to Non-Instituted Grounds
By: Kenneth S. Luchesi – A district court considered the scope of IPR estoppel where a petitioner in a partially instituted inter partes review failed to appeal the Board’s final written decision as to less than all challenged claims post-SAS where SAS issued during petitioner’s period for appeal.
Petitioners Be Mindful Of Decisions In Related IPRs
By: Susan M. Gerber and Matt Johnson – A recent PTAB decision provides a strong reminder of why Petitioners must consider decisions from related IPRs when making arguments before the PTAB.
Petitioner’s Reply May Expand Presented Arguments and Address New Claim Constructions
By: David Anderson and Dave Cochran – The Federal Circuit considered whether the Board erred by rejecting petitioner’s arguments as improperly raised in reply, where petitioner’s arguments responded to Patent Owner’s newly introduced claim construction positions raised after institution in Patent Owner’s response.